Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Tuesday, 31 May 2005

The IPKat has just stumbled across a rather useful facility on the ITMA website. Video recordings of ITMA's evening sessions (including the controversial talk given by Lord Justice Jacob) are available online, together with accompanying Powerpoint presentations.

The IPKat is pleased to see that the Intellectual Property Institute, together with the British Literary and Artistic Copyright Association, is holding an afternoon seminar on the ruling in Oakley v Animal[2005] EWHC 210 (Ch). IPKat readers (see blog, 23 February 2005)) will instantly recall that this is the case in which Peter Prescott QC stunned the unsuspecting world by suggesting that the UK's Design Regulations 2001 were both unconstitutional and in breach of EU law since they were implemented later than the cut-off date for implementation mentioned in the Design Directive.

Peter Prescott QC gave a bracing decision -- but will it withstand appeal?

The seminar, hosted by Bird & Bird, will take place on Wednesday 30 June from 1.30pm to 5pm, followed by drinks and light refreshments. Speakers are Guy Tritton, Martin Chamberlain and Neville March-Hunnings, For further details email Anne Goldstein here.

Fibre Fashion reports that South Africa's Constitutional Court ruled last Friday that T-shirt maker Laugh It Off was entitled to use the slogans "Black Labour" and "White Guilt" on politically provocative T-shirts that were a parody of the well known BLACK LABEL trade mark for beer. This use was an exercise of Laugh It Off's freedom of speech and did not constitute a use in a trade mark sense. Nor, ruled Justice Dikgang Moseneke, was there any infringement of copyright when SAB Miller's beer slogan

Laugh It Off are now planning an online auction of about 1,000 Black Labour T-shirts, the proceeds of which will go to an anti-alcohol abuse charity.

The IPKat is pleased with this decision for two reasons. First, it seems correct on the facts. Secondly, it sends out a message to brand owners that infringement litigation is rarely the best way to combat activity of this nature. By suing, SAB Miller has drawn the attention of people all over the world to the offending (and to many, offensive) words, when it could have taken a more positive stance, showing that it can take a joke even if it doesn't find it funny, and letting the whole thing blow discreetly over.

IPKat co-author Jeremy has done a first draft of his paper for next month's ECTA Conference, "Past, Present and the Future: the development of trade marks, designs and related rights in Europe". It's on the subject of improvements that could be grafted on to the existing European trade mark system. Would anyone like to look through it and make comments -- however critical -- on some of its more far-flung suggestions?

If you'd like to see the draft, please email Jeremy here for a copy.ECTA programme here

The IPKat is a creature of delicate sensibilities so, when reading an OHIM decision concerning morality and the scope of Art.7(1)(f) of the CTMR, he was astounded to discover that the Office had allowed BIG COCK & device to be registered. Had the Office taken leave of their senses, sozzled by the Spanish sun? What could be the nature of this device? The IPKat hated to think, but he had to know...

For your delectation and pleasure, the IPKat will post his findings tomorrow afternoon.

Monday, 30 May 2005

When other people have been wasting their bank holiday weekend in sad pursuits like recolonising the Lost Continent of Ikea, the IPKat's great friend Tibor Gold (a partner in Kilburn & Strode) has been at his productive best, producing the following notes on two recent Court of First Instance cases on Community trade marks that have failed to make it into English. The two cases are

The applicant’s CTM application in classes 29, 31 and 35 was for a composite mark made up of an abstract graphic alongside of which were the words GRUPO and SADA one above the other, with SADA much bigger and somewhat stylised. The intervener (opponent) opposed under Art. 8(1)(b) CTMR on the basis of its earlier Spanish registration in class 29 for a slightly stylised word mark ‘Sadia’. The Opposition Division allowed the opposition in respect of the applicant’s class 29 only, a decision upheld by the First Board of Appeal (“BoA”).

The effectively only ground of appeal to CFI was on the Art. 8(1)(b) CTMR point (=likelihood of confusion). However, the CFI found that that ground had three sub-grounds:

(i) the BoA’s failure to take into account of the high degree of knowledge of the mark by Spanish consumers;

(ii) the BoA’s misapplication of the concept of ‘global appreciation’ in the comparison of the marks and

(iii) the BoA’s failure to take into account the significance of the fact of co-existence in the Spanish market the applicant’s three other Spanish registered marks, all of which are older than the opponent’s mark.

The appeal failed for the following reasons:

(i) Art. 74(1) does not permit OHIM to examine facts or arguments that have not been invoked by the parties to the proceeding.: Henkel KGaA v OHIM (LHS(UK)) (KLEENCARE) T-308/01 [2003] ECR II-3253, [2004] ETMR 1022 (74); nor will the CFI entertain the examination of evidence, facts or arguments first introduced before it: Alejandro v OHIM (Anheuser-Busch) (BUDMEN) T-129/01 [2003] ECR II-2252.

(ii) The CFI did not agree with the appellant’s arguments that the BoA’s approach was unduly dissective rather than making an overall assessment. The CFI affirmed the findings of the BoA (a) that the relevant public to consider is the general Spanish public, (b) that the goods are identical, and (c) that while not ignoring the graphic element and the generic word GRUPO, the dominant visual and phonetic elements to compare are the words SADA and SADIA which are the elements the average consumer will remember and which are confusably similar. The CFI cited Oberhauser v OHIM (Petit Liberto),(FIFTIES), T-104/01, [2002] ECR II-4359, [2003] ETMR 58.

(iii) It is not wholly to be excluded that in certain cases the co-existence in the market of an applicant’s registered marks earlier than the opponent’s mark may be taken into account – but only if it is duly proved before the Office that (A) such co-existence is based on the absence of the risk of confusion on the part of the relevant public, and if further (B) the co-existing marks are identical. Here the applicant’s marks anterior to the opponent’s were not identical, nor did the applicant furnish any proof of the absence of the risk of confusion. Hence the BoA was right to reject this argument.

This started as an application for part-cancellation against a registered CTM “TELETECH GLOBAL VENTURES” in classes 35 and 38 based on the applicant’s earlier French national registration TELETECH INTERNATIONAL, also in those classes. The Cancellation Division of OHIM granted the application for some (only) of the services in the attacked part of the registration. On appeal, the BoA upheld the decision of the Cancellation Division in part. The CTM proprietor appealed to the CFI on the following grounds:

(i) Violation of the principles of co-existence and comparison of CTMs and distinctive national marks and signs;

(ii) Violation of the defendant’s rights of defence and

(iii) Misconstruction of Art. 8(1)(b) CTMR.

Under (i) the appellant sought to rely on an allegation that “TELETECH GLOBAL VENTURES” was a well-known mark, the sense of Art. 6bis of the Paris Convention as well as Art. 16 of TRIPs, in the EU and above all in France, since before the date of the mark owned by the applicant for cancellation. It also tried to rely on Art. 106 CTMR.

The CFI found that while the BoA’s decision on this point could have been put better and more clearly, it is nevertheless possible to understand it as stating that the allegedly well-known quality of the attacked mark has no influence on the determination of the question of the likelihood of confusion between the compared marks. Moreover, OHIM has no power or ability to examine the validity of an earlier right invoked against a CTM in cancellation proceedings: Matratzen Concord v OHIM (Hukla Germany), T-6/01, [2002] ECR II-4335, [2003] ETMR 392 (31).

The CFI also dismissed the argument of that it would be ‘absurd’ if the appellant could not convert its CTM into a French national registration on the basis that, if it is really well-known, the appellant can continue to use it and/or can base a French cancellation proceeding against the applicant‘s French registration on it. The argument founded on Art. 106 CTMR was given very short shrift as simply not analogous and misconceived. Similarly rejected was the argument based on Art. 6bis of the Paris Convention /Art. 16 of TRIPs which, as the CFI points out, merely provide the owner of a well-known mark with a right to oppose the use a later sign.

Under (ii), the appellant argued that if the BoA did not find its case on ‘well-knownness’ established, it should have been told this and allowed to introduce additional material. But the CFI disagreed. OHIM was under no such duty. The facts were that the evidence submitted by the appellant before OHIM did not establish that its mark was well-known, (even if that were relevant to the cancellation action). The CFI relied on Art. 74 CTMR which limits OHIM’s power to adjudicate only on the parties’ arguments and facts submitted to it. Thus, on the KLEENCARE principle, Henkel KGaA v OHIM (LHS(UK), T-308/01 [2003] ECR II-3253, [2004] ETMR 1022 (74), the CFI found no error with the BoA here.

Lastly, under (iii), the argument was only about the differences between the competing signs, the targeted public and the services being essentially the same. The CFI upheld the BoA’s finding that TELETECH was a coined word, with TELETECH being clearly dominant at the beginning of the whole, while ‘global’, ‘international and ‘ventures’ were descriptive words. Though the last-mentioned did not exist as a French word, not only does it lie at the – less likely to be memorised - end of a three-word mark but in this field the relevant public is particularly exposed to Anglicisms. Hence the finding of a likelihood of confusion was affirmed.

Sunday, 29 May 2005

Never one to miss a hip and cool trend man, the IPKat couldn’t help but ponder about the issues thrown up with regard to the ownership of the copyright in the Crazy Frog ringtone/single/media empire (details from the Daily Telegraph).

*It all started when Swedish teenager Daniel Malmedahl recorded himself imitating a moped.*The file was circulated on the and used on the Insanity Test – if you could listen to it for 60secs then clearly, you were insane.*Erik Wernquist, another Swede, took the test and, amused by it, created the frog character which he posted on his company’s website. Wernquist didn’t know where the sound came from and put out a call for its creator to get in touch with him. A friend of Malmedahl passed on Malmedahl’s details.*A worker at the German Jamba company saw the frog and told his boss about it. Jamba bought the rights from Malmedahl and Wernquist.*Jamba was bought by VeriSign.* The Crazy Frog was launched as a ringtone, mobile phone screen saver and a single.

His copyright won’t croak for another 70 years – makes the whole system worth it doesn’t it?

The IPKat says hurray for the power of the internet.Merpel says that everyone knows that the krazy kat came first.The Crazy Frog says

The IPKat has come across a rare phenomenon – a design decision from the UK Patent Office. In April 2003 Alexander John Garnett applied under the Registered Designs Act 1949 (as amended by the Registered Designs Regulations 2001) to register a design intended to be applied to a “stool”. The design consists of a stool which is shaped like a giant computer key and has a word on top. The design was registered but in September 2004 Ross Byers McBride applied to have the design registered for lack of novelty and individual character. He pointed to a stool of his own that he had displayed at UK and German design fairs.

The application for invalidity failed. An applicant for invalidity must provide evidence to prove his claim. Here the applicant for invalidity’s Statement of Case set out the grounds, but he had filed no evidence and the applicant’s claim to an earlier right have not been demonstrated. The photographs accompanying the Statement of Case did not confirm use of the illustrated design at any particular date or location.

The IPKat does his bit to test out design protection

The IPKat says that it’s unfortunate for Mr Byers McBride, but future applicants for invalidity have no excuse for not providing this basic evidence.

Some stools that aren’t eligible for design protection here, here and here

Friday, 27 May 2005

The IPKat draws his readers' attention to some bank-holiday reading. In Class International v Unilever, Advocate General Jacobs has discussed the trade mark position of goods which are in transit from one non-EU state to another but which travel via the EU.

Trade mark owners can't oppose the entry into the EU of non-EU goods bearing their trade marks on the grounds that such entry would constitute use of their trade marks under Art.5(1) of the TM Directive.

For as long as such goods remain non-Community goods, offering them for sale or selling them will not constitute ‘using [the mark] in the course of trade’ within the meaning of Article 5(1) of the TM Directive.

The trade mark owner can, under Article 5(1) of Directive 89/104, prevent their release into free circulation in the European Economic Area.

In trade mark infringement proceedings, the burden of proof is a matter for national law except with regard to the question whether the goods were put on the market in the European Economic Area under that trade mark with the proprietor’s consent.

If you're being plagued by counterfeiters, but don't like meetings with lawyers and trips to court, take another look at technical solutions to your problems. The bimonthly journal Product & Image Security, published by ECI International, carries both editorial and advertising content that demonstrates how much the average IP owner can do to detect fakes or to make his own products harder to copy.

The IPKat has just received the May/June 2005 issue, which carries on its cover the arresting statement:

"In the war against counterfeit and fraud, your basic and most effective weapon is the substrate your documents, packaging and labels are printed on".

Is this right? Merpel, for one, disagrees: "I think anyone's best weapon is their pricing policy. Their second best weapon is having a product no-one wants to copy anyway". What do visitors to this blog think? Please post your comments and let us know.

The May 2005 issue of Butterworths' LexisNexis Intellectual Property and Technology Cases has now been published. The print edition (which does indeed have a deliciously sleek black, shiny cover), ties in with this title's online service.

Black, shiny and much enjoyed by the IPKat ...

The cases reported in this issue are the four European Court of Justice rulings last November on the scope of database protection: cases C-203/02 British Horseracing Board v William Hill, C-444/02 Fixtures Marketing v Organismos Prognostikon, Case C-46/02 Fixtures Marketing v Oy Veykaus and Case C-338/02 Fixtures Marketing v Svenska Spel.

The IPKat thanks Gino van Roeyen of Netherlands firm Banning for tipping him off about another adidas two stripe/three stripe case.

As no doubt all the IPKat’s readers know, adidas owns the three-stipes trade mark in the Netherlands. H&M used two stripes on its clothing in 1996. adidas’ response was to bring infringement action under (in Directive terms) Arts 5(1)(b) and 5(2) which ended up in the 's-Hertogenbosch Court of Appeal. However, adidas failed on both claims.

Regarding confusion-based infringement, the visual difference between three and two stripes would stand out to consumers and prevent them from being confused.

Regarding dilution-style infringement, the court followed the ECJ’s decision in Adidas v Fitnessworld, finding that under the relevant provision, the degree of similarity between a mark with a reputation and a conflicting sign must be such that the relevant section of the public establishes a link between the sign and the mark. Here the evidence produced by adidas did not establish this since it examined the position at present, rather than proving that consumers made a link between the two sets of stripes in 1996. However, the court acknowledged that the scope of protection of a trade mark is not static and can be affected by changes in circumstances.

The IPKat models the latest in adidas knock-off gear

The IPKat notes that the Dutch court seems to be taking a different approach to similarity of marks under Arts 5(1)(b) and 5(2) respectively, otherwise the failure of the Art.5(1)(b) would have killed off the Art.5(2) claim. This has got to be the right approach following Adidas v Fitnessworld.

Thursday, 26 May 2005

1. In search of patent cases. The IPKat regularly scans the OHIM and UK Trade Mark Registry websites for decisions on trade marks and designs, but only rarely visits the European Patent Office (EPO) website or the UK Patent Office decisions pages in search of patent rulings in patent hearings. Should these decisions be part of this blog's regular diet? If so, do we have any kind readers who would like to tell us when important decisions are posted there so that the IPKat can capture them while they are still fresh?

2. What are they doing there? When browsing the decisions on the EPO website, the IPKat found not just EPO decisions but some case law from the German Bundespatentgericht. He doesn't mind them being there (indeed, he even welcomes them when they're available in English), but he was wondering what they were doing there in the first place. Any answers?

rare foray into competition law by the IPKat thanks to Findlaw. American Needle held a non-exclusive licence from the American National Football League (NFL), allowing it to produce clothing bearing the trade marked emblems of NFL teams. NFL stopped granting multiple licences in its trade marks and instead granted an exclusive licence to Reebok. American Needle sued NFL, claiming that its activities constituted restraint of trade and monopolisation, both of which are illegal under the US Sherman Antitrust Act. NFL took issue with American Needle’s definitions of the relevant market, arguing that a company’s trade marks cannot, on their own, constitute a market for antitrust purposes. Though, according to the judge, that’s usually true, here the team logos could be seen as the product themselves because consumers looking for NFL clothing wanted to show their allegiance to their teams and other clothing would not be suitable for this purpose.

The IPKat suspects that this is an exceptional case since the NFL seems to control all the football team marks and hence all possible substitutes as far as the football team insignia is concerned. He wonders if a single team’s trade mark would constitute a market of itself since consumers are very loyal to their teams and would not wear another team’s logo. For example, a Manchester United fan isn’t going to go out and buy and Arsenal shirt even if the Arsenal shirt is considerably cheaper than the Manchester United shirt. The two just aren’t substitutable.

IPKat co-master Ilanah has just unearthed a CFI decision that she's been waiting for for ages. There's just one snag - no English translation, even though the decision was given at the end of April. At the OHIM Board of Appeal stage Ampafrance v Johnson & Johnson (BEBE/MONBEBE) discussed inter alia how to prove detriment to distinctive character (blurring to our American friends) and the degree of likelihood of detriment to distinctive character that is required in registration situations. The IPKat's limited grasp of French causes him to believe that the Art.8(5) issue wasn't discussed by the CFI but if any of his readers know better, he'd love to hear about it. Also, assuming he's right, does anyone know why the Art.8(5) claim went away?

Wednesday, 25 May 2005

There are now 73 cases listed on OHIM's Community Trade Mark Court Decision page, apparently drawn from seven countries. As this vertical column of cases grows longer, it becomes increasingly user-hostile.

Can any of the IPKat's friendly moles in Alicante please tell him when these cases will be accessible and searchable in a more effective manner? And can anyone tell him why OHIM needs to tell users how many KB are taken up by each of the listed cases? Is there anybody out there who is going to have problems with the size of these documents?

Also posted today is the Court of First Instance decision in Case T-67/04 Spa Monopole v OHIM, Spa-Finders Travel Arrangements Ltd. Spa-Finders applied to register the words SPA-FINDERS as a Community trade mark for printed publications (Class 16) and travel agency services (Class 39). Spa Monopole opposed under Art.8(5) of Regulation 40/94, citing its earlier German and Benelux marks SPA and LES THERMES DE SPA for various good and services and maintaining that the applicant's mark would take unfair advantage of the repute of its earlier marks or would be detrimental to their distinctive character. The Opposition Division rejected the opposition; the Board of Appeal dismissed Spa Monopole's appeal and, today, so too did the Court of First Instance. Spa Monopole's case was lost principally because of the weakness of its evidence. For the most part, it was unable to prove that its earlier marks had any reputation; nor could it prove "free riding" or use that was detrimental to its distinctive character.

The IPKat thinks the CFI got it right this time. This was really a weak case. If unfair advantage or detriment are argued, you have to be able to get the tribunal to empathise with you. If you can't persuade them to share your sense of outrage, you know you've lost.

The Court of First Instance's decision on the appeal in Case T-352/02 Creative Technology v OHIM, Ortiz was posted today. CT applied to register the word mark PC WORK for "apparatus for recording, transmitting and reproducing sound or images, loudspeakers, amplifiers, record players, tape players, compact disc players, tuners, and parts and fittings for all the aforesaid goods" in Class 9. Ortiz opposed, citing his earlier registration of a Spanish figurative mark for "electronic audio equipment; loudspeakers; sound reproducing apparatus; radio, television and video apparatus", also in Class 9. The Opposition Division upheld the opposition on the ground that there was a likelihood of confusion between them; the Board of Appeal agreed. So, dismissing the appeal, did the Court of First Instance. The CFI said, in paragraphs 48-49:

"the word ‘pc’ in the trade mark applied for has a descriptive character in relation to the goods concerned, being, both in English and in Spanish, an abbreviation for ‘personal computer’. From the conceptual point of view, the distinctive element of that mark therefore consists of the word ‘works’. In the case of the earlier mark, it must be held, ... in the absence of non‑verbal figurative elements having independent evocative force, that the dominant element on a conceptual level consists of the word ‘work’.

Secondly, it must be regarded as plausible, as the applicant itself seems to recognise, that the targeted public, being made up of consumers familiar with the use of computers, has sufficient knowledge of English to understand the meaning of the word ‘work’ and to recognise its plural form in the word ‘works’".

The IPKat is reluctant to take issue with so many others, but queries the conclusion that there is a likelihood of confusion -- if only on the ground that he tried to be confused, but failed.

Case T-288/03TeleTech Holdings v OHIM - Teletech International (TELETECH GLOBAL VENTURES) has been posted on the Curia website in all of the EU's official languages except Czech, English, Italian Maltese, Slovene and Finnish. If you know what it's about, please tell the IPKat by posting a comment below.

This, from the BBC: the Association of American University Presses (AAUP), which represents 125 non-profit-making academic book and journal publishers, has accused Google of infringing copyright if it puts university libraries online. This will, the AAUP claims, have financially troubling consequences and could undermine sales of works in which publishers own the rights.

Last December Google announced deals with four leading universities, Oxford, Harvard, Stanford and Michigan. At a cost of $200m (£110m) Google aims to put 15 million volumes online from four top US libraries by 2015. It will also scan in out-of-copyright books from the UK's Oxford University. The idea is to make millions of important but previously inaccessible texts available to researchers everywhere.

The AAUP seeks clarification of 16 questions and claims the book-scanning scheme "appears to involve systematic infringement of copyright on a massive scale". Its members, who depend on book sales and other licensing agreements for the majority of their revenue, are worried that if users can get the information they want from its books by searching them online, they won't buy them. Further opposition has come from France, where there are fears that the Google project will enhance the dominance of the English language and of Anglo-Saxon ways of thinking. France and several other European countries recently got European Union backing for a separate book-scanning project for works not in English.

The IPKat is delighted at Google's plan, having suffered enough at the hands of several publishers and librarians over the years. Merpel's pleased too: she recalls how the introduction of printing threw 30,000 scribes out of work in Venice alone, and remembers the squeals of outrage from English publishers when copyright was introduced in 1710 in the Act of Anne. No-one has a divine right to make money out of books that are out of copyright anyway.

On 27 May UNESCO will host a French-German meeting on exceptions to copyright law. The meetings are part of a series which take place with the collaboration fo Institut de recherche en propriété intellectuelle Henri-Desbois and the Max Planck Institut with the purpose of stimulating debate on copyright in the digital environment and to discuss the future of copyright in France and Germany. The meeting will also propose changes necessary to bring their laws in line with European requirements.

The IPKat doesn't know much about this series of meetings. He wonders if any of his readers do. Merpel thinks this sounds fun - why isn't the UK involved?

Tuesday, 24 May 2005

Here's a decision that came out last week while the IPKat was in mid-air (or mid jetlag): Tercica Inc v Avecia Ltd and others, a ruling of Mr Justice Mann sitting in the Patents Court on Friday 20 May. The action concerned two applications for summary judgment in linked proceedings. In the first, Tercica -- a licensee under a Genentech mammal growth patent -- was suing Avecia and Insmed for infringement; in the second, Avecia and Insmed sought revocation of that patent. The patent had a Swiss claim, its essential inventive content being not so much the invention of a new drug as the use to which an existing drug is put.

"What I was asked to consider (among other things) was a concept which Jacob J has called he "artificial construct of a Swiss form claim" (see Merck & Co Inc's Patents [2003] FSR 498 at para 80), and in particular what is meant by "new use" where part of that new use involves a particular method of administration, and the interface with the method of treatment point. One of the questions which might arise is: just how far can the artificiality be pushed before reality forces its way in? These are not subjects which are particularly happily determined on applications for summary judgment, even when those applications are argued as well and as fully as the one before me was".

The IPKat thinks this is surely right. Swiss claims are notoriously difficult to litigate, since issues of novelty and obviousness lie at their very heart.

IPKat co-owner Jeremy is preparing a chapter for a Festschrift in memory of the late Professor Herchel Smith, a successful patent owner who endowed the Intellectual Property Chairs at Queen Mary and the University of Cambridge, among other acts of great generosity. Apropos of this, and noting that Smith is a very common surname, he wonders if any blog readers know of any cases or incidents involving confusion between different Smiths. All useful information sent here will be acknowledged in his chapter.

The June 2005 issue of Sweet & Maxwell's monthly European Intellectual Property Review has now been published. As ever, there's lots of interesting content. For example,

* there's a good article by Professor Paul Torremans (University of Nottingham) on determining which law applies to ownership and authorship disputes between employers and employees;

Amanda Michaels: explains that design protection is "real", not "ephemeral"

* Amanda Michaels writes an obituary for the "pattern parts" crusade following Mann J's decision last December in Dyson v Qualtex.

Modesty all but inhibits IPKat co-owner Jeremy from mentioning his own piece, "Pouring Oil on Troubled Waters or Inflaming the Passions? Comptrollers' Opinions and the Quest for Happiness", which many readers of this blog read and commented on during its draft phase. Thank you, all of you, for taking the trouble to do so.

Monday, 23 May 2005

Quorn Hunt, the decision saying that actual detriment to distinctive character or unfair advantage to distinctive character or repute, has been settled. Thus, there will be no decision by the Appointed Person in this case.

The IPKat though sees no reason why the original reasoning by the hearing officer should be anything but correct.

Another amazing British patent: inflatable policemen (above) are to be locatedat ports of entry as a means of deterring the importation of counterfeit goods

Following the passage of the Patents Act 2004, which is now partially in force, the UK Patent Office is inviting comments as part of its consultation programme for amending the Patents Rules 1995. The closing date for receipt of comments is 17 August 2005. The IPKat's really glad that other people pay close attention to these important details: he's much happier dealing with easier things like the big principles.

Another amazing British disaster: the first counterfeit inflatablepoliceman (above) has just been sighted at Felixstowe

While the IPKat was away last week LexisNexis' Butterworths All England Direct subscription service picked up Venture Investment Placement Ltd v Hall, a Chancery Division decision of Deputy Judge Robert Reid QC on Monday 16 May. It was only a small case, but the point was an important one.

Mediation works ... for the mediator, at any rate

The parties were involved in proceedings by which Hall sought to recover certain sums from VIP. At this point VIP applied for interim injunctive relief to stop Hall referring to or disclosing any matters discussed in the course of an unsuccessful mediation in which the parties had participated. VIP alleged that, since Hall had already made certain disclosures that were in breach of the mediation's confidentiality provisions, an injunction was needed to restrain any further breaches of confidence.

Robert Reid QC granted VIP injunctive relief. Since the purpose of mediation proceedings was to let the parties be frank and open, it followed that what each of them revealed in the course of a mediation was not to be used by the other side if the mediation failed.

The IPKat thinks that episodes like this will become increasingly common as judicial case management steers an increasing number of litigants towards mediation rather than trial. But he also wonders whether a party can use mediation strategically, disclosing information specifically so that the other side won't be able to make use of it later. Merpel's not sure about this, though. Surely, if mediation breaks down and a trial ensues, if the information in question is both confidential and relevant to the issue before the court, it would be possible to get a disclosure order for it anyway.

The IP newsletter of Irish law firm Matheson Ormsby Prentice reports that IRMA, the Irish Recorded Music Association is following the lead of its US and UK cousins and is chasing 17 individuals who have engaged in large-scale serial file-sharing (i.e. 2,000 files or more, which is said to equate to 200 albums). Damages and injunctive relief are the goal, but IRMA is starting with a quest for discovery of the identities of its 17 targets.

The IPKat notes that, despite its traditionally laid-back attitude towards copyright enforcement, Ireland can no longer be regarded as a haven for mass file-sharing.

The Republic of Latvia is pleased to notify the IPKat that it has ratified the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, which comes into force for Latvia on 26 July 2005.

Silicon.com reports that major computer companies Apple, Dell, HP, Intel, Microsoft and Netgear have come together in an attempt to invalidate a patent owned by Australia's Commonwealth Scientific and Industrial Research Organisation (CSIRO). The patent covers technology used in WiFi and are a result of research that began in 1989. CSIRO chief executive Dr Geoff Garrett has said

"As part of our business we create high quality intellectual property, and we are prepared to defend it."

He has added that any royalties will be reinvested in further research.

Look – no strings!

The IPKat says that this story highlights nicely that strong IP rights can work to the detriment, as well as the advantage, of big companies.

Saturday, 21 May 2005

After trekking home from last week's INTA Meeting in San Diego, physically tired and intellectually exhausted, what did the IPKat find in his mail this morning but the Twelfth Annual International Review of Trademark Jurisprudence which is the alter ego of the March-April 2005 issue of the Trademark Reporter. 54 jurisdictions -- excluding the US, which has its own Annual Review -- are covered in its 315 pages. The IPKat can't wait to get reading, though mostly he hopes he only finds cases he already knows about ...

Friday, 20 May 2005

*The People’s Daily reports that China is bringing into force Administrative Measures for Internet Copyright Protection on 30 May. The measures are being jointly issued by the National Copyright Administration and the Ministry of Information Industry.

*The Local reports that Sweden’s Justice Minister, Thomas Bodström, has called for the Swedish Government to proceed with caution in passing new DRM laws. He has said that consumers must be able to make copies of CDs that they have bought for private use, and what’s more, the IFPI have agreed with him. The Swedish Parliament is due to vote on passing new laws in this area on 25 May.

The IPKat is in favour of legislation that protects the legitimate rights of IP holders but that is subtle enough to not penalise those who have fair reasons for making use of the protected subject matter.

BBC has reported that Hello! magazine won its appeal against an order of Mr Justice Lindsay that it had to pay arch-rival OK! magazine £1m in damages for using illicit ictures of Catherine Zeta Jones' wedding. Hello! admitted it used those photos to spoil rival OK's supposedly exclusive coverage (for which the latter paid quite handsomely). The trial judge's ruling that Hello! had breached the film stars' rights of privacy was however upheld, leaving it to pay the publicity-conscious couple the paltry sum of £14,600.

OK! may lose its damages, but Ms Zeta Jones' appeal is undiminished

The IPKat cannot believe that this dispute, which has already spawned a host of courtroom hostilities, will stop before it gets to the House of Lords. Merpel says, "I wonder if Douglas and Zeta Jones will be selling first rights to photos on the courtroom steps".

At trial Mr Justice Patten held that recording company Hyperion had infringed Sawkins' copyright in modern performance editions of the works of the obscure long-dead (and therefore out of copyright) French composer Lalande (1657-1726). Sawkins, a musicologist, carried out lots of research into his works and created new performing editions by making corrections and additions to the notation necessary to make the music playable. He also added or amended figured bass lines and corrected wrong notes, without actually "re-composing" Lalande's music and contended that this was an application of his skill and labour which was entitled to copyright protection.

Hyperion, who produced a CD of music including recordings of performances using Sawkins' scores, was happy to pay a fee for providing the performing editions but refused to pay any royalties on the basis that an editor was not entitled to copyright in a performing edition of music that had fallen into the pulbic domain. Sawkins' claim that his performing editions were original musical works was accepted at trial and by the Court of Appeal.

According to the Court of Appeal, *

* the effort, skill and time which Sawkins spent in making the performing editions were sufficient to satisfy the requirement that they should be "original" works in the copyright sense, even though Sawkins worked on the scores of existing musical works that were out of copyright and had no intention of adding any new music of his own;

* Hyperion's defence that Sawkins' work was not "music" rested on an unduly narrow view of what constituted "music" for copyright purposes, since the subsistence of copyright involved an assessment of the whole work in which copyright was claimed;

Lalonde: jukebox idol at the time of Louis XIV and XV

* Hyperion's submissions ignored the fact that the totality of the sounds produced by the musicians was affected by the information inserted in the performing editions: the sound on the CD was not just that of the musicians playing music composed by Lalande.

* if copyright subsisted in the performing editions, the performers who used Sawkins' scores reproduced the overwhelming majority of the editorial interventions marked up by him in his scores. If this was done without his authorisation, it infringed his copyright whether or not the performers included any additional material was included by the performers.

* There was a breach of Sawkins' moral right to be known as the author of his work under s.77 of the Copyright, Designs and Patents Act 1988 because the CD did not identify Sawkins as the author of the performing editions.

The IPKat had no doubt that this appeal would fail and thinks the Court of Appeal have got it right. He also notes that, although Lord Justice Jacob was sitting, the other two judges also managed to make their voices heard (in Lord Justice Mummery's case quite substantially).

Wednesday, 18 May 2005

One very fatigued IPKat is edging towards the end of a long, hard INTA programme here in San Diego. So many points to consider:

* What the current Dilution Bill in the US will actually achieve;

* Who is supporting the Bill, and why?

* The wisdom of the ECJ leaving so much to national courts in its recent Gillette decision (on the use of the word mark GILLETTE by another manufacturer to indicate that its blades fitted Gillette blade holders). In particular, what happens if the way this is done is regarded as honest commercial use in some EU States but not others.

The IPKat is sure that these questions won't go away and looks forward to giving them some heavy thought in the near future.

Tuesday, 17 May 2005

The IPKat notes that a reference has been made to the ECJ from Belgium concerning the point at which a mark's distinctivness must be assessed in order to qualify for the extended scope of infringement protection under Directive 89/104.

The IPKat is delighted to announce that INTA is pushing ahead with plans to develop an active Trademark Professors group. The early work has already been achieved (reduced rate membership and registration fees for academics and students; pleasantly social breakfast, etc) but there is more to do. What the IPKat wants (and what INTA wants too, it seems) is a forum where academic trade mark enthuasiasts and thinkers can come together and discuss, together with IP owners and practitioners, issues in trade mark law that bind them -- even if their political, economic and philosophical views are quite different from one another. Watch this blog for more news and contact details.

One thing the IPKat can report on is that yesterday was the day that Oxford University Press went public, announcing the forthcoming publication of a new monthly law journal, the Journal of Intellectual Property Law and Practice. JIPLP will be fully functional as from January 2006 but a "taster" is being prepared for November 2005. If you're interested in writing for it, contact IPKat co-owner Jeremy for further details.

The IPKat has been so busy at this week's International Trademark Association meeting in San Diego that he hasn't had the chance to do any serious blogging. He has however been roaming around, incognito, among the 7,500 participants, listening carefully to what they say and picking up all sorts of juicy information. He will be fully back in action next week, but in the meantime he will do his best to post things on the blog for your delectation.

Saturday, 14 May 2005

Wendy's restaurant chain has solved the mystery of the finger allegedly found in a bowl of chille. According to a report from the BBC the finger belonged to a family friend of Anna Ayala, the woman whose claims and lawsuit against the food outlet have cost it millions of dollars in lost sales, resulting in the laying off of staff members.

Ms Ayala claimed she had bitten down on the finger which she described as "kind of hard, crunchy". She said the incident had caused her "great emotional distress". She has since withdrawn her lawsuit. The fast food chain has insisted all along that the finger did not originate at one of its establishments as no staff had lost a digit and no suppliers had reported any hand accidents.

The IPKat observes that franchises are always more vulnerable to this sort of thing, since the brand name is ubiquitous and a slander on the reputation of just one of its licensees can rub off on all of them.

A new case has been referred to the European Court of Justice. It's Case C-145/05 Levi Strauss & Co v Casucci Spa, from the Cour de Cassation, Belgium. The curia website reads as follows:

Reference has been made ... for a preliminary ruling in the proceedings between Levi Strauss & Co and Casucci Spa on the following questions:

* For the purposes of determining the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, in accordance with Article 5(1) of Council Directive 89/104, must the court take into account the perception of the public concerned at the time when use commenced of the trade mark or similar sign which allegedly infringes the trade mark?

Levi Strauss -- and the trousers he was never photographed while wearing ...

* If not, may the court take into account the perception of the public concerned at any time after commencement of the use complained of? Is it entitled in particular to take into account the perception of the public concerned at the time it delivers its ruling?

* Where, in application of the criterion referred to in the first question, the court finds that the trade mark has been infringed, is it entitled, as a general rule, to order cessation of the infringing use of the sign?

* Can the position be different if the claimant's trade mark has lost its distinctive character wholly or in part after commencement of the infringing use, but solely where that loss is due wholly or in part to an act or omission by the proprietor of that trade mark?

The IPKat looks particularly forward to the answer to the first of those questions: the relationship between the scope of protection accorded to a trade mark and the perception of the public has already been considered in terms of the 'principle of proportionality' (the better-known the mark, the broader the protection), but public perception of a mark is not a constant: it may vary in accordance with such factors as the nature of the use made of it by its owner or others, the presence or absence of competitors and so on. Merpel asks, why are questions to the ECJ always couched in such stiff and formal terms, and does it matter? The ECJ is quite happy to rewrite the questions so that it can give the answers it thinks the referring court should want.

Friday, 13 May 2005

Songwriter Steven Wallace is accusing Britney Spears of copyright infringement before the Indianapolis District Court according to the BBC. Wallace did not register his copyright when he wrote the song. Instead he performed a "poor man's copyright" by putting the lyrics in a sealed envelope and them posting them to himself in order to obtain a postmark. The lyrics of the two songs are almost identical and Wallace claims to be in possession of an email in which Spears admits to copying the song.

The IPKat isn't sure what the point of having a copyright register is if those who don't register are entitled to the same protection anyway.

Thursday, 12 May 2005

The Metro reports that the familities of the songwriters featured in the Buena Vista Social Club is seeking compensation in the UK High Court from Peer International Corporation, who claims that it bought the copyright to various songs featured in the film in the 1930s. The families however claim that the artists were not properly paid. PIC however claims that it set up accounts in favour of the signers after US trade embargos made it possible to pay the funds directly to Cuban artists and claims that the beneficiary here would be the Cuban Government.

The IPKat thinks that this case is worth making a song and dance about...

Next week the IPKat's owners Jeremy and Ilanah will both be attending the International Trademark Association's 127th Annual Meeting in San Diego. If you're going to be there, don't forget to say hello.

If you're not going to be there, please be patient. It can be difficult keeping a good flow of bloggables going when you're jet-lagged, submerged in a crowd of 7,000 intellectual property enthusiasts and struggling to remember that in the US everyone seems to be driving on the wrong side of the road ...

... Czech, Hungarian or Maltese, but it's made its way into all the other official languages of the European Union. The IPKat is of course referring to Case T-31/03Grupo Sado SA v OHIM, Sadia SA. It looks to him like a "likelihood of confusion" opposition. The applicant's mark is on the left and the opponent's is on the right.

.

Both parties deal in goods and services in Classes 29, 31 and 35.

Flaunting his fluent command of Latvian, the IPKat can tell you that the court first decided to "prasību noraidīt"; then, to be on the safe side, it also "prasītāja atlīdzina tiesāšanās izdevumus". Merpel says "Who are you kidding, fat cat? All you can speak is English and Purr-sian. But if the Curia website won't give us the ruling in English, perhaps some kind Latvian (or Greek or Portuguese) would be so kind as to explain ..."

Also decided by the Court of First Instance today was Case T-390/03 CM Capital Markets Holding SA v OHIM, Caja de Ahorros de Murcia. CM applied to register this figurative mark as a Community trade mark for goods and services in Classes 1 through to 42. The opponent challenged this, citing its earlier Spanish rights in this mark for services in Classes 35, 36, 38 and 42. The Opposition Division upheld the opposition in respect of certain services in Classes 35, 36, 38 and 42 on the ground that there was a likelihood of confusion between the two marks in Spain. The Board of Appeal disagreed and threw the opposition out, so the opponent appealed to the CFI.

The CFI, dismissing the appeal, agreed with the Board of Appeal that there was no likelihood of confusion, even in Spain. The fact that both marks shared the initials "CM" did not make them conceptually similar for the very good reason that the CM in each case stood for something quite different.

The IPKat agrees with this reasoning. It would be curious if, for example, in the United Kingdom the use of the letters "AA" suggested a conceptual similarity if the users were, respectively, the Automobile Association and Alcoholics Anonymous.

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